HR 1249 IHRHCommentsClose CommentsPermalink

Union Calendar No. 54CommentsClose CommentsPermalink

112th CONGRESSCommentsClose CommentsPermalink

1st SessionCommentsClose CommentsPermalink

H. R. 1249CommentsClose CommentsPermalink

[Report No. 112-98, Part I]CommentsClose CommentsPermalink

To amend title 35, United States Code, to provide for patent reform.CommentsClose CommentsPermalink

IN THE HOUSE OF REPRESENTATIVESCommentsClose CommentsPermalink

March 30, 2011CommentsClose CommentsPermalink

Mr. SMITH of Texas (for himself, Mr. GOODLATTE, and Mr. ISSA) introduced the following bill; which was referred to the Committee on the Judiciary, and in addition to the Committee on the Budget, for a period to be subsequently determined by the Speaker, in each case for consideration of such provisions as fall within the jurisdiction of the committee concernedCommentsClose CommentsPermalink

June 1, 2011CommentsClose CommentsPermalink

Additional sponsors: Mr. CHABOT, Mr. GALLEGLY, and Mr. DUNCAN of TennesseeCommentsClose CommentsPermalink

June 1, 2011CommentsClose CommentsPermalink

Reported from the Committee on the Judiciary with an amendmentCommentsClose CommentsPermalink

[Strike out all after the enacting clause and insert the part printed in italic]CommentsClose CommentsPermalink

June 1, 2011CommentsClose CommentsPermalink

The Committee on the Budget discharged; committed to the Committee of the Whole House on the State of the Union and ordered to be printedCommentsClose CommentsPermalink

[For text of introduced bill, see copy of bill as introduced on March 30, 2011]CommentsClose CommentsPermalink

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A BILLCommentsClose CommentsPermalink

To amend title 35, United States Code, to provide for patent reform.CommentsClose CommentsPermalink

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, CommentsClose CommentsPermalink

SECTION 1. SHORT TITLE; TABLE OF CONTENTS.

(a) Short Title- This Act may be cited as the ‘America Invents Act’. CommentsClose CommentsPermalink





(b) Table of Contents- The table of contents for this Act is as follows: CommentsClose CommentsPermalink





Sec. 1. Short title; table of contents. CommentsClose CommentsPermalink





Sec. 2. First inventor to fileDefinitions. CommentsClose CommentsPermalink





Sec. 3. First inventor to file. CommentsClose CommentsPermalink





Sec. 4. Inventor’s oath or declaration. CommentsClose CommentsPermalink





Sec. 45. Defense to infringement based on earlier inventor. CommentsClose CommentsPermalink





Sec. 56. Post-grant review proceedings. CommentsClose CommentsPermalink





Sec. 67. Patent Trial and Appeal Board. CommentsClose CommentsPermalink





Sec. 78. Preissuance submissions by third parties. CommentsClose CommentsPermalink





Sec. 89. Venue. CommentsClose CommentsPermalink





Sec. 910. Fee setting authority. CommentsClose CommentsPermalink





Sec. 101. Fees for patent services. CommentsClose CommentsPermalink





Sec. 112. Supplemental examination. CommentsClose CommentsPermalink





Sec. 123. Funding agreements. CommentsClose CommentsPermalink





Sec. 134. Tax strategies deemed within the prior art. CommentsClose CommentsPermalink





Sec. 145. Best mode requirement. CommentsClose CommentsPermalink





Sec. 156. Marking. CommentsClose CommentsPermalink





Sec. 167. Advice of counsel. CommentsClose CommentsPermalink





Sec. 17. Ownership; assignment.Sec. 18. Transitional program for covered business method patents. CommentsClose CommentsPermalink





Sec. 19. Clarification of jurisdictionJurisdiction and procedural matters. CommentsClose CommentsPermalink





Sec. 20. Technical amendments. CommentsClose CommentsPermalink





Sec. 21. Travel expenses and payment of administrative judges. CommentsClose CommentsPermalink





Sec. 22. Patent and Trademark Office funding. CommentsClose CommentsPermalink





Sec. 23. Satellite offices. CommentsClose CommentsPermalink





Sec. 24. Designation of Detroit satellite office. CommentsClose CommentsPermalink





Sec. 25. Patent Ombudsman Program for small business concerns. CommentsClose CommentsPermalink





Sec. 256. Priority examination for technologies important to American competitiveness. CommentsClose CommentsPermalink





Sec. 26. Designation of Detroit satellite office.Sec. 27. Effective dateCalculation of 60-day period for application of patent term extension. CommentsClose CommentsPermalink





Sec. 28. Study on implementation. CommentsClose CommentsPermalink





Sec. 29. Pro bono program. CommentsClose CommentsPermalink





Sec. 30. Effective date. CommentsClose CommentsPermalink





Sec. 31. Budgetary effects. CommentsClose CommentsPermalink

SEC. 2. DEFINITIONS.

SEC. 3. FIRST INVENTOR TO FILE.

(a) Definitions-Section 100 of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(1) in subsection (e), by striking ‘or inter partes reexamination under section 311’; and CommentsClose CommentsPermalink





(2) by adding at the end the following: CommentsClose CommentsPermalink





‘(f) The term ‘inventor’ means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention. CommentsClose CommentsPermalink





‘(g) The terms ‘joint inventor’ and ‘coinventor’ mean any 1 of the individuals who invented or discovered the subject matter of a joint invention. CommentsClose CommentsPermalink





‘(h) The term ‘joint research agreement’ means a written contract, grant, or cooperative agreement entered into by 2 or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. CommentsClose CommentsPermalink





‘(i)(1) The term ‘effective filing date’ for a claimed invention in a patent or application for patent means-- CommentsClose CommentsPermalink





‘(A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or CommentsClose CommentsPermalink





‘(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c). CommentsClose CommentsPermalink





‘(2) The effective filing date for a claimed invention in an application for reissue or reissued patent shall be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought. CommentsClose CommentsPermalink





‘(j) The term ‘claimed invention’ means the subject matter defined by a claim in a patent or an application for a patent.’. CommentsClose CommentsPermalink





(b) Conditions for Patentability- CommentsClose CommentsPermalink





(1) IN GENERAL-Section 102 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

‘Sec. 102. Conditions for patentability; novelty

‘(a) Novelty; Prior Art- A person shall be entitled to a patent unless-- CommentsClose CommentsPermalink





‘(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or CommentsClose CommentsPermalink





‘(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. CommentsClose CommentsPermalink





‘(b) Exceptions- CommentsClose CommentsPermalink





‘(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if-- CommentsClose CommentsPermalink





‘(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or CommentsClose CommentsPermalink





‘(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. CommentsClose CommentsPermalink





‘(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if-- CommentsClose CommentsPermalink





‘(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; CommentsClose CommentsPermalink





‘(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or CommentsClose CommentsPermalink





‘(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. CommentsClose CommentsPermalink





‘(c) Common Ownership Under Joint Research Agreements- Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if-- CommentsClose CommentsPermalink





‘(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention; CommentsClose CommentsPermalink





‘(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and CommentsClose CommentsPermalink





‘(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. CommentsClose CommentsPermalink





‘(d) Patents and Published Applications Effective as Prior Art- For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application-- CommentsClose CommentsPermalink





‘(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or CommentsClose CommentsPermalink





‘(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.’. CommentsClose CommentsPermalink





(2) CONTINUITY OF INTENT UNDER THE CREATE ACT- The enactment ofsection 102(c) of title 35, United States Code, under paragraph (1) of this subsection is done with the same intent to promote joint research activities that was expressed, including in the legislative history, through the enactment of the Cooperative Research and Technology Enhancement Act of 2004 (Public Law 108-453; the ‘CREATE Act’), the amendments of which are stricken by subsection (c) of this section. The United States Patent and Trademark Office shall administer section 102(c) of title 35, United States Code, in a manner consistent with the legislative history of the CREATE Act that was relevant to its administration by the United States Patent and Trademark Office. CommentsClose CommentsPermalink





(3) CONFORMING AMENDMENT- The item relating to section 102 in the table of sections for chapter 10 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink





‘102. Conditions for patentability; novelty.’. CommentsClose CommentsPermalink





(c) Conditions for Patentability; Nonobvious Subject Matter-Section 103 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

‘Sec. 103. Conditions for patentability; non-obvious subject matter

‘A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.’. CommentsClose CommentsPermalink





(d) Repeal of Requirements for Inventions Made Abroad-Section 104 of title 35, United States Code, and the item relating to that section in the table of sections for chapter 10 of title 35, United States Code, are repealed. CommentsClose CommentsPermalink





(e) Repeal of Statutory Invention Registration- CommentsClose CommentsPermalink





(1) IN GENERAL-Section 157 of title 35, United States Code, and the item relating to that section in the table of sections for chapter 14 of title 35, United States Code, are repealed. CommentsClose CommentsPermalink





(2) REMOVAL OF CROSS REFERENCES-Section 111(b)(8) of title 35, United States Code, is amended by striking ‘sections 115, 131, 135, and 157’ and inserting ‘sections 131 and 135’. CommentsClose CommentsPermalink





(3) EFFECTIVE DATE- The amendments made by this subsection shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act, and shall apply to any request for a statutory invention registration filed on or after that effective date. CommentsClose CommentsPermalink





(f) Earlier Filing Date for Inventor and Joint Inventor-Section 120 of title 35, United States Code, is amended by striking ‘which is filed by an inventor or inventors named’ and inserting ‘which names an inventor or joint inventor’. CommentsClose CommentsPermalink





(g) Conforming Amendments- CommentsClose CommentsPermalink





(1) RIGHT OF PRIORITY-Section 172 of title 35, United States Code, is amended by striking ‘and the time specified in section 102(d)’. CommentsClose CommentsPermalink





(2) LIMITATION ON REMEDIES-Section 287(c)(4) of title 35, United States Code, is amended by striking ‘the earliest effective filing date of which is prior to’ and inserting ‘which has an effective filing date before’. CommentsClose CommentsPermalink





(3) INTERNATIONAL APPLICATION DESIGNATING THE UNITED STATES: EFFECT-Section 363 of title 35, United States Code, is amended by striking ‘except as otherwise provided in section 102(e) of this title’. CommentsClose CommentsPermalink





(4) PUBLICATION OF INTERNATIONAL APPLICATION: EFFECT-Section 374 of title 35, United States Code, is amended by striking ‘sections 102(e) and 154(d)’ and inserting ‘section 154(d)’. CommentsClose CommentsPermalink





(5) PATENT ISSUED ON INTERNATIONAL APPLICATION: EFFECT- The second sentence ofsection 375(a) of title 35, United States Code, is amended by striking ‘Subject to section 102(e) of this title, such’ and inserting ‘Such’. CommentsClose CommentsPermalink





(6) LIMIT ON RIGHT OF PRIORITY-Section 119(a) of title 35, United States Code, is amended by striking ‘; but no patent shall be granted’ and all that follows through ‘one year prior to such filing’. CommentsClose CommentsPermalink





(7) INVENTIONS MADE WITH FEDERAL ASSISTANCE-Section 202(c) of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(A) in paragraph (2)-- CommentsClose CommentsPermalink





(i) by striking ‘publication, on sale, or public use,’ and all that follows through ‘obtained in the United States’ and inserting ‘the 1-year period referred to in section 102(b) would end before the end of that 2-year period’; and CommentsClose CommentsPermalink





(ii) by striking ‘prior to the end of the statutory’ and inserting ‘before the end of that 1-year’; and CommentsClose CommentsPermalink





(B) in paragraph (3), by striking ‘any statutory bar date that may occur under this title due to publication, on sale, or public use’ and inserting ‘the expiration of the 1-year period referred to in section 102(b)’. CommentsClose CommentsPermalink





(h) Derived Patents- CommentsClose CommentsPermalink





(1) IN GENERAL-Section 291 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

‘Sec. 291. Derived Patents

‘(a) In General- The owner of a patent may have relief by civil action against the owner of another patent that claims the same invention and has an earlier effective filing date, if the invention claimed in such other patent was derived from the inventor of the invention claimed in the patent owned by the person seeking relief under this section. CommentsClose CommentsPermalink





‘(b) Filing Limitation- An action under this section may be filed only before the end of the 1-year period beginning on the date of the issuance of the first patent containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or joint inventor.’. CommentsClose CommentsPermalink





(2) CONFORMING AMENDMENT- The item relating to section 291 in the table of sections for chapter 29 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink





‘291. Derived patents.’. CommentsClose CommentsPermalink





(i) Derivation Proceedings-Section 135 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

‘Sec. 135. Derivation proceedings

‘(a) Institution of Proceeding- An applicant for patent may file a petition to institute a derivation proceeding in the Office. The petition shall set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed. Any such petition may be filed only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention, shall be made under oath, and shall be supported by substantial evidence. Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding. The determination by the Director whether to institute a derivation proceeding shall be final and nonappealable. CommentsClose CommentsPermalink





‘(b) Determination by Patent Trial and Appeal Board- In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed. The Director shall prescribe regulations setting forth standards for the conduct of derivation proceedings. CommentsClose CommentsPermalink





‘(c) Deferral of Decision- The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until the expiration of the 3-month period beginning on the date on which the Director issues a patent that includes the claimed invention that is the subject of the petition. The Patent Trial and Appeal Board also may defer action on a petition for a derivation proceeding, or stay the proceeding after it has been instituted, until the termination of a proceeding under chapter 30, 31, or 32 involving the patent of the earlier applicant. CommentsClose CommentsPermalink





‘(d) Effect of Final Decision- The final decision of the Patent Trial and Appeal Board, if adverse to claims in an application for patent, shall constitute the final refusal by the Office on those claims. The final decision of the Patent Trial and Appeal Board, if adverse to claims in a patent, shall, if no appeal or other review of the decision has been or can be taken or had, constitute cancellation of those claims, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation. CommentsClose CommentsPermalink





‘(e) Settlement- Parties to a proceeding instituted under subsection (a) may terminate the proceeding by filing a written statement reflecting the agreement of the parties as to the correct inventors of the claimed invention in dispute. Unless the Patent Trial and Appeal Board finds the agreement to be inconsistent with the evidence of record, if any, it shall take action consistent with the agreement. Any written settlement or understanding of the parties shall be filed with the Director. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents or applications, and shall be made available only to Government agencies on written request, or to any person on a showing of good cause. CommentsClose CommentsPermalink





‘(f) Arbitration- Parties to a proceeding instituted under subsection (a) may, within such time as may be specified by the Director by regulation, determine such contest or any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of title 9, to the extent such title is not inconsistent with this section. The parties shall give notice of any arbitration award to the Director, and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration award shall be unenforceable until such notice is given. Nothing in this subsection shall preclude the Director from determining the patentability of the claimed inventions involved in the proceeding.’. CommentsClose CommentsPermalink





(j) Elimination of References to Interferences- (1) Sections 134, 145, 146, 154, 305, and 314and 305 of title 35, United States Code, are each amended by striking ‘Board of Patent Appeals and Interferences’ each place it appears and inserting ‘Patent Trial and Appeal Board’. CommentsClose CommentsPermalink





(2)(A) Sections 146 and 157(a) of title 35, United States Code, are eachSection 146 of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(i) by striking ‘an interference’ each place it appears and inserting and inserting ‘a derivation proceeding’; and CommentsClose CommentsPermalink





(ii) by striking ‘interference’ each additional place it appears and inserting ‘the interference’ and inserting ‘the derivation proceeding’. CommentsClose CommentsPermalink





(B) The subparagraph heading forsection 154(b)(1)(C) of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink





‘(C) GUARANTEE OF ADJUSTMENTS FOR DELAYS DUE TO DERIVATION PROCEEDINGS, SECRECY ORDERS, AND APPEALS- ’. CommentsClose CommentsPermalink





(3) The section heading forsection 134 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

‘Sec. 134. Appeal to the Patent Trial and Appeal Board’.

(4) The section heading forsection 146 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

‘Sec. 146. Civil action in case of derivation proceeding’.

(5) The items relating to sections 134 and 135 in the table of sections for chapter 12 of title 35, United States Code, are amended to read as follows: CommentsClose CommentsPermalink





‘134. Appeal to the Patent Trial and Appeal Board. CommentsClose CommentsPermalink





‘135. Derivation proceedings.’. CommentsClose CommentsPermalink





(6) The item relating to section 146 in the table of sections for chapter 13 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink





‘146. Civil action in case of derivation proceeding.’. CommentsClose CommentsPermalink





(k) Statute of Limitations- CommentsClose CommentsPermalink





(1) IN GENERAL-Section 32 of title 35, United States Code, is amended by inserting between the third and fourth sentences the following: ‘A proceeding under this section shall be commenced not later than the earlier of either the date that is 10 years after the date on which the misconduct forming the basis for the proceeding occurred, or 1 year after the date on which the misconduct forming the basis for the proceeding is made known to an officer or employee of the Office as prescribed in the regulations established under section 2(b)(2)(D).’. CommentsClose CommentsPermalink





(2) REPORT TO CONGRESS- The Director shall provide on a biennial basis to the Judiciary Committees of the Senate and House of Representatives a report providing a short description of incidents made known to an officer or employee of the Office as prescribed in the regulations established undersection 2(b)(2)(D) of title 35, United States Code, that reflect substantial evidence of misconduct before the Office but for which the Office was barred from commencing a proceeding under section 32 of title 35, United States Code, by the time limitation established by the fourth sentence of that section. CommentsClose CommentsPermalink





(3) EFFECTIVE DATE- The amendment made by paragraph (1) shall apply in any case in which the time period for instituting a proceeding under section 32 of title 35, United Statesection 32 of title 35, United States Code, had not lapsed before the date of the enactment of this Act. CommentsClose CommentsPermalink





(l) Small Business Study- CommentsClose CommentsPermalink





(1) DEFINITIONS- In this subsection-- CommentsClose CommentsPermalink





(A) the term ‘Chief Counsel’ means the Chief Counsel for Advocacy of the Small Business Administration; CommentsClose CommentsPermalink





(B) the term ‘General Counsel’ means the General Counsel of the United States Patent and Trademark Office; and CommentsClose CommentsPermalink





(C) the term ‘small business concern’ has the meaning given that term under section 3 of the Small Business Act (15 U.S.C. 632). CommentsClose CommentsPermalink





(2) STUDY- CommentsClose CommentsPermalink





(A) IN GENERAL- The Chief Counsel, in consultation with the General Counsel, shall conduct a study of the effects of eliminating the use of dates of invention in determining whether an applicant is entitled to a patent under title 35, United States Code. CommentsClose CommentsPermalink





(B) AREAS OF STUDY- The study conducted under subparagraph (A) shall include examination of the effects of eliminating the use of invention dates, including examining-- CommentsClose CommentsPermalink





(i) how the change would affect the ability of small business concerns to obtain patents and their costs of obtaining patents; CommentsClose CommentsPermalink





(ii) whether the change would create, mitigate, or exacerbate any disadvantages for applicants for patents that are small business concerns relative to applicants for patents that are not small business concerns, and whether the change would create any advantages for applicants for patents that are small business concerns relative to applicants for patents that are not small business concerns; CommentsClose CommentsPermalink





(iii) the cost savings and other potential benefits to small business concerns of the change; and CommentsClose CommentsPermalink





(iv) the feasibility and costs and benefits to small business concerns of alternative means of determining whether an applicant is entitled to a patent under title 35, United States Code. CommentsClose CommentsPermalink





(3) REPORT- Not later than the date that is 1 year after the date of the enactment of this Act, the Chief Counsel shall submit to the Committee on Small Business and Entrepreneurship and the Committee on the Judiciary of the Senate and the Committee on Small Business and the Committee on the Judiciary of the House of Representatives a report regardingon the results of the study under paragraph (2). CommentsClose CommentsPermalink





(m) Report on Prior User Rights- CommentsClose CommentsPermalink





(1) IN GENERAL- Not later than the end of the 4-month period beginning on the date of the enactment of this Act, the Director shall report, to the Committee on the Judiciary of the Senate and the Committee on the Judiciary of the House of Representatives, the findings and recommendations of the Director on the operation of prior user rights in selected countries in the industrialized world. The report shall include the following: CommentsClose CommentsPermalink





(A) A comparison between patent laws of the United States and the laws of other industrialized countries, including members of the European Union and Japan, Canada, and Australia. CommentsClose CommentsPermalink





(B) An analysis of the effect of prior user rights on innovation rates in the selected countries. CommentsClose CommentsPermalink





(C) An analysis of the correlation, if any, between prior user rights and start-up enterprises and the ability to attract venture capital to start new companies. CommentsClose CommentsPermalink





(D) An analysis of the effect of prior user rights, if any, on small businesses, universities, and individual inventors. CommentsClose CommentsPermalink





(E) An analysis of legal and constitutional issues, if any, that arise from placing trade secret law in patent law. CommentsClose CommentsPermalink





(F) An analysis of whether the change to a first-to-file patent system creates a particular need for prior user rights. CommentsClose CommentsPermalink





(2) CONSULTATION WITH OTHER AGENCIES- In preparing the report required under paragraph (1), the Director shall consult with the United States Trade Representative, the Secretary of State, and the Attorney General. CommentsClose CommentsPermalink





(n) Effective Date- CommentsClose CommentsPermalink





(1) IN GENERAL- Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act, and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time-- CommentsClose CommentsPermalink





(A) a claim to a claimed invention that has an effective filing date as defined insection 100(i) of title 35, United States Code, that is on or after the effective date described in this paragraph; or CommentsClose CommentsPermalink





(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim. CommentsClose CommentsPermalink





(2) INTERFERING PATENTS- The provisions of sections 102(g), 135, and 291 of title 35, United States Code, as in effect on the day before the date of the enactment of this Act, shall apply to each claim of an application for patent, and any patent effective date set forth in paragraph (1) of this subsection, shall apply to each claim of an application for patent, and any patent issued thereon, for which the amendments made by this section also apply, if such application or patent contains or contained at any time-- CommentsClose CommentsPermalink





(A) a claim to an invention having an effective filing date as defined insection 100(i) of title 35, United States Code, that occurs before the effective date set forth in paragraph (1) of this subsection; or CommentsClose CommentsPermalink





(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim. CommentsClose CommentsPermalink





(o) Study of Patent Litigation- CommentsClose CommentsPermalink





(1) GAO STUDY- The Comptroller General of the United States shall conduct a study of the consequences of litigation by non-practicing entities, or by patent assertion entities, related to patent claims made under title 35, United States Code, and regulations authorized by that title. CommentsClose CommentsPermalink





(2) CONTENTS OF STUDY- The study conducted under this subsection shall include the following: CommentsClose CommentsPermalink





(A) The annual volume of litigation described in paragraph (1) over the 20-year period ending on the date of the enactment of this Act. CommentsClose CommentsPermalink





(B) The volume of cases comprising such litigation that are found to be without merit after judicial review. CommentsClose CommentsPermalink





(C) The impacts of such litigation on the time required to resolve patent claims. CommentsClose CommentsPermalink





(D) The estimated costs, including the estimated cost of defense, associated with such litigation for patent holders, patent licensors, patent licensees, and inventors, and for users of alternate or competing innovations. CommentsClose CommentsPermalink





(E) The economic impact of such litigation on the economy of the United States, including the impact on inventors, job creation, employers, employees, and consumers. CommentsClose CommentsPermalink





(F) The benefit to commerce, if any, supplied by non-practicing entities or patent assertion entities that prosecute such litigation. CommentsClose CommentsPermalink





(3) REPORT TO CONGRESS- The Comptroller General shall, not later than the date that is 1 year after the date of the enactment of this Act, submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the results of the study required under this subsection, including recommendations for any changes to laws and regulations that will minimize any negative impact of patent litigation that was the subject of such study. CommentsClose CommentsPermalink





(p) Sense of Congress- It is the sense of the Congress that converting the United States patent registration system from ‘first inventor to use’ to a system of ‘first inventor to file’ will promote the progress of science by securing for limited times to inventors the exclusive rights to their discoveries and provide inventors with greater certainty regarding the scope of protection granted by the exclusive rights to their discoveries. CommentsClose CommentsPermalink





(q) Sense of Congress- It is the sense of the Congress that converting the United States patent registration system from ‘first inventor to use’ to a system of ‘first inventor to file’ will harmonize the United States patent registration system with the patent registration systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote a greater sense of international uniformity and certainty in the procedures used for securing the exclusive rights of inventors to their discoveries. CommentsClose CommentsPermalink

SEC. 34. INVENTOR’S OATH OR DECLARATION.

(a) Inventor’s Oath or Declaration- CommentsClose CommentsPermalink





(1) IN GENERAL-Section 115 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

‘Sec. 115. Inventor’s oath or declaration

‘(a) Naming the Inventor; Inventor’s Oath or Declaration- An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application. CommentsClose CommentsPermalink





‘(b) Required Statements- An oath or declaration under subsection (a) shall contain statements that-- CommentsClose CommentsPermalink





‘(1) the application was made or was authorized to be made by the affiant or declarant; and CommentsClose CommentsPermalink





‘(2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application. CommentsClose CommentsPermalink





‘(c) Additional Requirements- The Director may specify additional information relating to the inventor and the invention that is required to be included in an oath or declaration under subsection (a). CommentsClose CommentsPermalink





‘(d) Substitute Statement- CommentsClose CommentsPermalink





‘(1) IN GENERAL- In lieu of executing an oath or declaration under subsection (a), the applicant for patent may provide a substitute statement under the circumstances described in paragraph (2) and such additional circumstances that the Director may specify by regulation. CommentsClose CommentsPermalink





‘(2) PERMITTED CIRCUMSTANCES- A substitute statement under paragraph (1) is permitted with respect to any individual who-- CommentsClose CommentsPermalink





‘(A) is unable to file the oath or declaration under subsection (a) because the individual-- CommentsClose CommentsPermalink





‘(i) is deceased; CommentsClose CommentsPermalink





‘(ii) is under legal incapacity; or CommentsClose CommentsPermalink





‘(iii) cannot be found or reached after diligent effort; or CommentsClose CommentsPermalink





‘(B) is under an obligation to assign the invention but has refused to make the oath or declaration required under subsection (a). CommentsClose CommentsPermalink





‘(3) CONTENTS- A substitute statement under this subsection shall-- CommentsClose CommentsPermalink





‘(A) identify the individual with respect to whom the statement applies; CommentsClose CommentsPermalink





‘(B) set forth the circumstances representing the permitted basis for the filing of the substitute statement in lieu of the oath or declaration under subsection (a); and CommentsClose CommentsPermalink





‘(C) contain any additional information, including any showing, required by the Director. CommentsClose CommentsPermalink





‘(e) Making Required Statements in Assignment of Record- An individual who is under an obligation of assignment of an application for patent may include the required statements under subsections (b) and (c) in the assignment executed by the individual, in lieu of filing such statements separately. CommentsClose CommentsPermalink





‘(f) Time for Filing- A notice of allowance under section 151 may be provided to an applicant for patent only if the applicant for patent has filed each required oath or declaration under subsection (a) or has filed a substitute statement under subsection (d) or recorded an assignment meeting the requirements of subsection (e). CommentsClose CommentsPermalink





‘(g) Earlier-Filed Application Containing Required Statements or Substitute Statement- CommentsClose CommentsPermalink





‘(1) EXCEPTION- The requirements under this section shall not apply to an individual with respect to an application for patent in which the individual is named as the inventor or a joint inventor and who claims the benefit under section 120, 121, or 365(c) of the filing of an earlier-filed application, if-- CommentsClose CommentsPermalink





‘(A) an oath or declaration meeting the requirements of subsection (a) was executed by the individual and was filed in connection with the earlier-filed application; CommentsClose CommentsPermalink





‘(B) a substitute statement meeting the requirements of subsection (d) was filed in connection with the earlier filed application with respect to the individual; or CommentsClose CommentsPermalink





‘(C) an assignment meeting the requirements of subsection (e) was executed with respect to the earlier-filed application by the individual and was recorded in connection with the earlier-filed application. CommentsClose CommentsPermalink





‘(2) COPIES OF OATHS, DECLARATIONS, STATEMENTS, OR ASSIGNMENTS- Notwithstanding paragraph (1), the Director may require that a copy of the executed oath or declaration, the substitute statement, or the assignment filed in connection with the earlier-filed application be included in the later-filed application. CommentsClose CommentsPermalink





‘(h) Supplemental and Corrected Statements; Filing Additional Statements- CommentsClose CommentsPermalink





‘(1) IN GENERAL- Any person making a statement required under this section may withdraw, replace, or otherwise correct the statement at any time. If a change is made in the naming of the inventor requiring the filing of 1 or more additional statements under this section, the Director shall establish regulations under which such additional statements may be filed. CommentsClose CommentsPermalink





‘(2) SUPPLEMENTAL STATEMENTS NOT REQUIRED- If an individual has executed an oath or declaration meeting the requirements of subsection (a) or an assignment meeting the requirements of subsection (e) with respect to an application for patent, the Director may not thereafter require that individual to make any additional oath, declaration, or other statement equivalent to those required by this section in connection with the application for patent or any patent issuing thereon. CommentsClose CommentsPermalink





‘(3) SAVINGS CLAUSE- A patent shall not be invalid or unenforceable based upon the failure to comply with a requirement under this section if the failure is remedied as provided under paragraph (1). CommentsClose CommentsPermalink





‘(i) Acknowledgment of Penalties- Any declaration or statement filed pursuant to this section shall contain an acknowledgment that any willful false statement made in such declaration or statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.’. CommentsClose CommentsPermalink





(2) RELATIONSHIP TO DIVISIONAL APPLICATIONS-Section 121 of title 35, United States Code, is amended by striking ‘If a divisional application’ and all that follows through ‘inventor.’. CommentsClose CommentsPermalink





(3) REQUIREMENTS FOR NONPROVISIONAL APPLICATIONS-Section 111(a) of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(A) in paragraph (2)(C), by striking ‘by the applicant’ and inserting ‘or declaration’; CommentsClose CommentsPermalink





(B) in the heading for paragraph (3), by inserting ‘OR DECLARATION’ after ‘AND OATH’; and CommentsClose CommentsPermalink





(C) by inserting ‘or declaration’ after ‘and oath’ each place it appears. CommentsClose CommentsPermalink





(4) CONFORMING AMENDMENT- The item relating to section 115 in the table of sections for chapter 11 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink





‘115. Inventor’s oath or declaration.’. CommentsClose CommentsPermalink





(b) Filing by Other Than Inventor- CommentsClose CommentsPermalink





(1) IN GENERAL-Section 118 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

‘Sec. 118. Filing by other than inventor

‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties. If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.’. CommentsClose CommentsPermalink





(2) CONFORMING AMENDMENT-Section 251 of title 35, United States Code, is amended in the third undesignated paragraph by inserting ‘or the application for the original patent was filed by the assignee of the entire interest’ after ‘claims of the original patent’. CommentsClose CommentsPermalink





(c) Specification-Section 112 of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(1) in the first undesignated paragraph-- CommentsClose CommentsPermalink





(A) by striking ‘The specification’ and inserting ‘(a) In General- The specification’; and CommentsClose CommentsPermalink





(B) by striking ‘of carrying out his invention’ and inserting ‘or joint inventor of carrying out the invention’; CommentsClose CommentsPermalink





(2) in the second undesignated paragraph-- CommentsClose CommentsPermalink





(A) by striking ‘The specification’ and inserting ‘(b) Conclusion- The specification’; and CommentsClose CommentsPermalink





(B) by striking ‘applicant regards as his invention’ and inserting ‘inventor or a joint inventor regards as the invention’; CommentsClose CommentsPermalink





(3) in the third undesignated paragraph, by striking ‘A claim’ and inserting ‘(c) Form- A claim’; CommentsClose CommentsPermalink





(4) in the fourth undesignated paragraph, by striking ‘Subject to the following paragraph,’ and inserting ‘(d) Reference in Dependent Forms- Subject to subsection (e),’; CommentsClose CommentsPermalink





(5) in the fifth undesignated paragraph, by striking ‘A claim’ and inserting ‘(e) Reference in Multiple Dependent Form- A claim’; and CommentsClose CommentsPermalink





(6) in the last undesignated paragraph, by striking ‘An element’ and inserting ‘(f) Element in Claim for a Combination- An element’. CommentsClose CommentsPermalink





(d) Conforming Amendments- CommentsClose CommentsPermalink





(1) Sections 111(b)(1)(A) of title 35, United States Code, is amended by striking ‘the first paragraph of section 112 of this title’ and inserting ‘section 112(a)’. CommentsClose CommentsPermalink





(2) Section 111(b)(2) is amended by strikingSection 111(b)(2) of title 35, United States Code, is amended by striking ‘the second through fifth paragraphs of section 112,’ and inserting ‘subsections (b) through (e) of section 112,’. CommentsClose CommentsPermalink





(e) Effective Date- The amendments made by this section shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to any patent application that is filed on or after that effective date. CommentsClose CommentsPermalink

SEC. 45. DEFENSE TO INFRINGEMENT BASED ON EARLIER INVENTOR.

Section 273 of title 35, United States Code, is amended as follows: CommentsClose CommentsPermalink





(1) Subsection (a) is amended-- CommentsClose CommentsPermalink





(A) in paragraph (1),-- CommentsClose CommentsPermalink





(i) by striking ‘use of a method in’ and inserting ‘use of the subject matter of a patent in or outside’ ;

(B) by striking paragraph (3); and

(C) by redesignating paragraph (4) as paragraph (3’; and CommentsClose CommentsPermalink




(ii) by adding ‘and’ after the semicolon; CommentsClose CommentsPermalink





(B) in paragraph (2), by striking the semicolon at the end of subparagraph (B) and inserting a period; and CommentsClose CommentsPermalink





(C) by striking paragraphs (3) and (4). CommentsClose CommentsPermalink





(2) Subsection (b) is amended-- CommentsClose CommentsPermalink





(A) in paragraph (1),-- CommentsClose CommentsPermalink





(i) by striking ‘for a method’; and CommentsClose CommentsPermalink





(ii) by striking ‘at least 1 year’ and all that follows through the end and inserting ‘and commercially used the subject matter at least 1 year before the effective filing date of the claimed invention that is the subject matter of the patent.’; CommentsClose CommentsPermalink





(B) in paragraph (2), by striking ‘patented method’ and inserting ‘patented process’; CommentsClose CommentsPermalink





(C) in paragraph (3)-- CommentsClose CommentsPermalink





(i) by striking subparagraph (A); CommentsClose CommentsPermalink





(ii) by striking subparagraph (B) and inserting the following: CommentsClose CommentsPermalink





‘(A) DERIVATION AND PRIOR DISCLOSURE TO THE PUBLIC- A person may not assert the defense under this section if-- CommentsClose CommentsPermalink





‘(i) the subject matter on which the defense is based was derived from the patentee or persons in privity with the patentee; or CommentsClose CommentsPermalink





‘(ii) the claimed invention that is the subject of the defense was disclosed to the public in a manner that qualified for the exception from the prior art under section 102(b) and the commercialization date relied upon under paragraph (1) of this subsection for establishing entitlement to the defense is less than 1 year before the date of such disclosure to the public;’; CommentsClose CommentsPermalink





(iii) by redesignating subparagraphs (B) and (C) as subparagraph (A) and (C), respectively; and

(iii) by adding at the end the following:

‘(DB); and CommentsClose CommentsPermalink




(iv) by adding at the end the following: CommentsClose CommentsPermalink





‘(C) FUNDING- CommentsClose CommentsPermalink





‘(i) DEFENSE NOT AVAILABLE IN CERTAIN CASES- A person may not assert the defense under this section if the subject matter of the patent on which the defense is based was developed pursuant to a funding agreement under chapter 18 of this title or by a nonprofit institution of higher education, or a technology transfer organization affiliated with such an institution, that did not receive funding from a private business enterprise in support of that development. CommentsClose CommentsPermalink





‘(ii) DEFINITIONS- In this subparagraph-- CommentsClose CommentsPermalink





‘(I) the term ‘institution of higher education’ has the meaning given that term in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); and CommentsClose CommentsPermalink





‘(II) the term ‘technology transfer organization’ means an organization the primary purpose of which is to facilitate the commercialization of technologies developed by one or more institutions of higher education.’; and CommentsClose CommentsPermalink





(D) by amending paragraph (6) to read as follows: CommentsClose CommentsPermalink





‘(6) PERSONAL DEFENSE- CommentsClose CommentsPermalink





‘(A) IN GENERAL- The defense under this section may be asserted only by the person who performed or caused the performance of the acts necessary to establish the defense, as well as any other entity that controls, is controlled by, or is under common control with such person, and, except for any transfer to the patent owner, the right to assert the defense shall not be licensed or assigned or transferred to another person except as an ancillary and subordinate part of a good faith assignment or transfer for other reasons of the entire enterprise or line of business to which the defense relates. CommentsClose CommentsPermalink





‘(B) EXCEPTION- Notwithstanding subparagraph (A), any person may, on the person’s own behalf, assert a defense based on the exhaustion of rights provided under paragraph (2), including any necessary elements thereof.’. CommentsClose CommentsPermalink

SEC. 56. POST-GRANT REVIEW PROCEEDINGS.

(a) Inter Partes Review- Chapter 31 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

‘CHAPTER 31--INTER PARTES REVIEW

‘Sec. CommentsClose CommentsPermalink





‘311. Inter partes review. CommentsClose CommentsPermalink





‘312. Petitions. CommentsClose CommentsPermalink





‘313. Preliminary response to petition. CommentsClose CommentsPermalink





‘314. Institution of inter partes review. CommentsClose CommentsPermalink





‘315. Relation to other proceedings or actions. CommentsClose CommentsPermalink





‘316. Conduct of inter partes review. CommentsClose CommentsPermalink





‘317. Settlement. CommentsClose CommentsPermalink





‘318. Decision of the Board. CommentsClose CommentsPermalink





‘319. Appeal. CommentsClose CommentsPermalink

‘Sec. 311. Inter partes review

‘(a) In General- Subject to the provisions of this chapter, a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent. The Director shall establish, by regulation, fees to be paid by the person requesting the review, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review. CommentsClose CommentsPermalink





‘(b) Scope- A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications. CommentsClose CommentsPermalink





‘(c) Filing Deadline- A petition for inter partes review shall be filed after the later of either-- CommentsClose CommentsPermalink





‘(1) the date that is 12 months year after the grant of a patent or issuance of a reissue of a patent; or CommentsClose CommentsPermalink





‘(2) if a post-grant review is instituted under chapter 32, the date of the termination of such post-grant review. CommentsClose CommentsPermalink

‘Sec. 312. Petitions

‘(a) Requirements of Petition- A petition filed under section 311 may be considered only if-- CommentsClose CommentsPermalink





‘(1) the petition is accompanied by payment of the fee established by the Director under section 311; CommentsClose CommentsPermalink





‘(2) the petition identifies all real parties in interest; CommentsClose CommentsPermalink





‘(3) the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including-- CommentsClose CommentsPermalink





‘(A) copies of patents and printed publications that the petitioner relies upon in support of the petition; and CommentsClose CommentsPermalink





‘(B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions; CommentsClose CommentsPermalink





‘(4) the petition provides such other information as the Director may require by regulation; and CommentsClose CommentsPermalink





‘(5) the petitioner provides copies of any of the documents required under paragraphs (2), (3), and (4) to the patent owner or, if applicable, the designated representative of the patent owner. CommentsClose CommentsPermalink





‘(b) Public Availability- As soon as practicable after the receipt of a petition under section 311, the Director shall make the petition available to the public. CommentsClose CommentsPermalink

‘Sec. 313. Preliminary response to petition

‘(a) Preliminary Response- If an inter partes review petition is filed under section 311, the patent owner shall have the right to file a preliminary response to the petition, within a time period set by the Director.‘(b) Content of Response- A preliminary response to a petition for inter partes review shall set, that sets forth reasons why no inter partes review should be instituted based upon the failure of the petition to meet any requirement of this chapter. CommentsClose CommentsPermalink

‘Sec. 314. Institution of inter partes review

‘(a) Threshold- The Director may not authorize an inter partes review to commence unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that a substantial new question of patentability exists.‘(b) there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. CommentsClose CommentsPermalink





‘(b) Timing- The Director shall determine whether to institute an inter partes review under this chapter pursuant to a petition filed under section 311 within 3 months after-- CommentsClose CommentsPermalink





‘(1) receiving a preliminary response to the petition under section 313; or CommentsClose CommentsPermalink





‘(2) if no such preliminary response is filed, the last date on which such response may be filed. CommentsClose CommentsPermalink





‘(c) Notice- The Director shall notify the petitioner and patent owner, in writing, of the Director’s determination under subsection (a), and shall make such notice available to the public as soon as is practicable. Such notice shall include the date on which the review shall commence. CommentsClose CommentsPermalink





‘(d) No Appeal- The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable. CommentsClose CommentsPermalink

‘Sec. 315. Relation to other proceedings or actions

‘(a) Infringer’s Civil Action- CommentsClose CommentsPermalink





‘(1) INTER PARTES REVIEW BARRED BY CIVIL ACTION- An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner, real party in interest, or privy of the petitioner filed a civil action challenging the validity of a claim of the patent. CommentsClose CommentsPermalink





‘(2) STAY OF CIVIL ACTION- If the petitioner, real party in interest, or privy of the petitioner files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for inter partes review of the patent, that civil action shall be automatically stayed until either-- CommentsClose CommentsPermalink





‘(A) the patent owner requestsmoves the court to lift the stay; CommentsClose CommentsPermalink





‘(B) the patent owner files a civil action or counterclaim alleging that the petitioner, real party in interest, or privy of the petitioner has infringed the patent; or CommentsClose CommentsPermalink





‘(C) the petitioner, real party in interest, or privy of the petitioner requestsmoves the court to dismiss the civil action. CommentsClose CommentsPermalink





‘(3) TREATMENT OF COUNTERCLAIM- A counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection. CommentsClose CommentsPermalink





‘(b) Patent Owner’s Action- An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 9 months1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). CommentsClose CommentsPermalink





‘(c) Joinder- If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. CommentsClose CommentsPermalink





‘(d) Multiple Proceedings- Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of an inter partes review, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding. CommentsClose CommentsPermalink





‘(e) Estoppel- CommentsClose CommentsPermalink





‘(1) PROCEEDINGS BEFORE THE OFFICE- The petitioner in an inter partes review under this chapterof a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to athat claim on any ground that the petitioner raised or reasonably could have raised during an inter partes review of the claim that resulted in a final written decision under section 318(a)that inter partes review. CommentsClose CommentsPermalink





‘(2) CIVIL ACTIONS AND OTHER PROCEEDINGS- The petitioner in an inter partes review under this chapterof a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that a claim in a patentthe claim is invalid on any ground that the petitioner raised or reasonably could have raised during an inter partes review of the claim that resulted in a final written decision under section 318(a)that inter partes review. CommentsClose CommentsPermalink

‘Sec. 316. Conduct of inter partes review

‘(a) Regulations- The Director shall prescribe regulations-- CommentsClose CommentsPermalink





‘(1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or document filed with the intent that it be sealed shall, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion; CommentsClose CommentsPermalink





‘(2) setting forth the standards for the showing of sufficient grounds to institute a review under section 314(a); CommentsClose CommentsPermalink





‘(3) establishing procedures for the submission of supplemental information after the petition is filed; CommentsClose CommentsPermalink





‘(4) in accordance with section 2(b)(2), establishing and governing inter partes review under this chapter and the relationship of such review to other proceedings under this title; CommentsClose CommentsPermalink





‘(5) setting a time period for requesting joinder under section 315(c);‘(6) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to-- CommentsClose CommentsPermalink





‘(A) the deposition of witnesses submitting affidavits or declarations; and CommentsClose CommentsPermalink





‘(B) what is otherwise necessary in the interest of justice; CommentsClose CommentsPermalink





‘(76) prescribing sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding, such as to harass or to cause unnecessary delay or an unnecessary increase in the cost of the proceeding; CommentsClose CommentsPermalink





‘(87) providing for protective orders governing the exchange and submission of confidential information; CommentsClose CommentsPermalink





‘(98) providing for the filing by the patent owner of a response to the petition under section 313 after an inter partes review has been instituted, and requiring that the patent owner file with such response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response; CommentsClose CommentsPermalink





‘(109) setting forth standards and procedures for allowing the patent owner to move to amend the patent under subsection (d) to cancel a challenged claim or propose a reasonable number of substitute claims, and ensuring that any information submitted by the patent owner in support of any amendment entered under subsection (d) is made available to the public as part of the prosecution history of the patent; CommentsClose CommentsPermalink





‘(110) providing either party with the right to an oral hearing as part of the proceeding; CommentsClose CommentsPermalink





and‘(12‘(11) requiring that the final determination in an inter partes review be issued not later than 1 year after the date on which the Director notices the institution of a review under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 315(c).‘(b) ; CommentsClose CommentsPermalink





‘(12) setting a time period for requesting joinder under section 315(c); and CommentsClose CommentsPermalink





‘(13) providing the petitioner with at least 1 opportunity to file written comments within a time period established by the Director. CommentsClose CommentsPermalink





‘(b) Considerations- In prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter. CommentsClose CommentsPermalink





‘(c) Patent Trial and Appeal Board- The Patent Trial and Appeal Board shall, in accordance with section 6, conduct each proceeding authorized by the Director.‘(d)inter partes review instituted under this chapter. CommentsClose CommentsPermalink





‘(d) Amendment of the Patent- CommentsClose CommentsPermalink





‘(1) IN GENERAL- During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways: CommentsClose CommentsPermalink





‘(A) Cancel any challenged patent claim. CommentsClose CommentsPermalink





‘(B) For each challenged claim, propose a reasonable number of substitute claims. CommentsClose CommentsPermalink





‘(2) ADDITIONAL MOTIONS- Additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 317, or as permitted by regulations prescribed by the Director. CommentsClose CommentsPermalink





‘(3) SCOPE OF CLAIMS- An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter. CommentsClose CommentsPermalink





‘(e) Evidentiary Standards- In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence. CommentsClose CommentsPermalink

‘Sec. 317. Settlement

‘(a) In General- An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. If the inter partes review is terminated with respect to a petitioner under this section, no estoppel under section 315(e) shall apply to that petitionerttach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner’s institution of that inter partes review. If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a). CommentsClose CommentsPermalink





‘(b) Agreements in Writing- Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties. If any party filing suchAt the request of a party to the proceeding, the agreement or understanding so requests, the copyhall be treated as business confidential information, shall be kept separate from the file of the inter partes reviewvolved patents, and shall be made available only to Federal Government agencies upon written request, or to any otheron written request, or to any person on a showing of good cause. CommentsClose CommentsPermalink

‘Sec. 318. Decision of the Board

‘(a) Final Written Decision- If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d). CommentsClose CommentsPermalink





‘(b) Certificate- If the Patent Trial and Appeal Board issues a final written decision under subsection (a) and the time for appeal has expired or any appeal has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable. CommentsClose CommentsPermalink





‘(c) Amended or New Claim- Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes review under this chapter shall have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation therefor, before the issuance of a certificate under subsection (b). CommentsClose CommentsPermalink





‘(d) Data on Length of Review- The Office shall make available to the public data describing the length of time between the institution of, and the issuance of a final written decision under subsection (a) for, each inter partes review. CommentsClose CommentsPermalink

‘Sec. 319. Appeal

‘A party dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) may appeal the decision pursuant to sections 141 through 144. Any party to the inter partes review shall have the right to be a party to the appeal.‘Sec. 320. Request for stay of certain proceedings

‘If a party seeks a stay of a civil action alleging infringement of a patent under section 281, or a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930, relating to an inter partes review under this chapter, the court shall decide whether to enter a stay based on--

‘(1) whether a stay, or the denial thereof, will simplify the issues in question and streamline the trial;

‘(2) whether discovery is complete and whether a trial date has been set;

‘(3) whether a stay, or the denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party; and

‘(4) whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court.’. CommentsClose CommentsPermalink




(b) Conforming Amendment- The table of chapters for part III of title 35, United States Code, is amended by striking the item relating to chapter 31 and inserting the following: CommentsClose CommentsPermalink

-------------------------------

-------------------------------

-------------------------------

(c) Regulations and Effective Date- CommentsClose CommentsPermalink





(1) REGULATIONS- The Director shall, not later than the date that is 1 year after the date of the enactment of this Act, issue regulations to carry out chapter 31 of title 35, United States Code, as amended by subsection (a) of this section. CommentsClose CommentsPermalink





(2) APPLICABILITY- CommentsClose CommentsPermalink





(A) IN GENERAL- The amendments made by subsection (a) shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to any patent issued before, on, or after that effective date. CommentsClose CommentsPermalink





(B) GRADUATED IMPLEMENTATION- The Director may impose a limit on the number of inter partes reviews that may be instituted under chapter 31 of title 35, United States Code, during each of the first 4 1-year periods in which the amendments made by subsection (a) are in effect, if such number in each year equals or exceeds the number of such inter partesinter partes reexaminations that are ordered under chapter 31 of title 35, United States Code, in the last fiscal year ending before the effective date of the amendments made by subsection (a). CommentsClose CommentsPermalink





(d) Post-Grant Review- Part III of title 35, United States Code, is amended by adding at the end the following: CommentsClose CommentsPermalink

‘CHAPTER 32--POST-GRANT REVIEW

‘Sec. CommentsClose CommentsPermalink





‘321. Post-grant review. CommentsClose CommentsPermalink





‘322. Petitions. CommentsClose CommentsPermalink





‘323. Preliminary response to petition. CommentsClose CommentsPermalink





‘324. Institution of post-grant review. CommentsClose CommentsPermalink





‘325. Relation to other proceedings or actions. CommentsClose CommentsPermalink





‘326. Conduct of post-grant review. CommentsClose CommentsPermalink





‘327. Settlement. CommentsClose CommentsPermalink





‘328. Decision of the Board. CommentsClose CommentsPermalink





‘329. Appeal. CommentsClose CommentsPermalink

‘Sec. 321. Post-grant review

‘(a) In General- Subject to the provisions of this chapter, a person who is not the patent owner may file with the Office a petition to institute a post-grant review of a patent. The Director shall establish, by regulation, fees to be paid by the person requesting the review, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the post-grant review. CommentsClose CommentsPermalink





‘(b) Scope- A petitioner in a post-grant review may request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim). CommentsClose CommentsPermalink





‘(c) Filing Deadline- A petition for a post-grant review may only be filed not later than the date that is 12 months year after the date of the grant of the patent or of the issuance of a reissue patent (as the case may be). CommentsClose CommentsPermalink

‘Sec. 322. Petitions

‘(a) Requirements of Petition- A petition filed under section 321 may be considered only if-- CommentsClose CommentsPermalink





‘(1) the petition is accompanied by payment of the fee established by the Director under section 321; CommentsClose CommentsPermalink





‘(2) the petition identifies all real parties in interest; CommentsClose CommentsPermalink





‘(3) the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including-- CommentsClose CommentsPermalink





‘(A) copies of patents and printed publications that the petitioner relies upon in support of the petition; and CommentsClose CommentsPermalink





‘(B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on other factual evidence or on expert opinions; CommentsClose CommentsPermalink





‘(4) the petition provides such other information as the Director may require by regulation; and CommentsClose CommentsPermalink





‘(5) the petitioner provides copies of any of the documents required under paragraphs (2), (3), and (4) to the patent owner or, if applicable, the designated representative of the patent owner. CommentsClose CommentsPermalink





‘(b) Public Availability- As soon as practicable after the receipt of a petition under section 321, the Director shall make the petition available to the public. CommentsClose CommentsPermalink

‘Sec. 323. Preliminary response to petition

‘(a) Preliminary Response- If a post-grant review petition is filed under section 321, the patent owner shall have the right to file a preliminary response to the petition within 2 months after the date on which the petition is filed.‘(b) Content of Response- A preliminary response to a petition for post-grant review shall set forth, within a time period set by the Director, that sets forth reasons why no post-grant review should be instituted based upon the failure of the petition to meet any requirement of this chapter. CommentsClose CommentsPermalink

‘Sec. 324. Institution of post-grant review

‘(a) Threshold- The Director may not authorize a post-grant review to commence unless the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable. CommentsClose CommentsPermalink





‘(b) Additional Grounds- The determination required under subsection (a) may also be satisfied by a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications. CommentsClose CommentsPermalink





‘(c) Timing- The Director shall determine whether to institute a post-grant review under this chapter pursuant to a petition filed under section 321 within 3 months after-- CommentsClose CommentsPermalink





‘(1) receiving a preliminary response to the petition under section 323; or CommentsClose CommentsPermalink





‘(2) if no such preliminary response is filed, the last date on which such response may be filed. CommentsClose CommentsPermalink





‘(d) Notice- The Director shall notify the petitioner and patent owner, in writing, of the Director’s determination under subsection (a) or (b), and shall make such notice available to the public as soon as is practicable. The Director shall make each notice of the institution of a post-grant review available to the public. Such notice shall include the date on which the review shall commence. CommentsClose CommentsPermalink





‘(e) No Appeal- The determination by the Director whether to institute a post-grant review under this section shall be final and nonappealable. CommentsClose CommentsPermalink

‘Sec. 325. Relation to other proceedings or actions

‘(a) Infringer’s Civil Action- CommentsClose CommentsPermalink





‘(1) POST-GRANT REVIEW BARRED BY CIVIL ACTION- A post-grant review may not be instituted under this chapter if, before the date on which the petition for such a review is filed, the petitioner, real party in interest, or privy of the petitioner filed a civil action challenging the validity of a claim of the patent. CommentsClose CommentsPermalink





‘(2) STAY OF CIVIL ACTION- If the petitioner, real party in interest, or privy of the petitioner files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for post-grant review of the patent, that civil action shall be automatically stayed until either-- CommentsClose CommentsPermalink





‘(A) the patent owner requestsmoves the court to lift the stay; CommentsClose CommentsPermalink





‘(B) the patent owner files a civil action or counterclaim alleging that the petitioner, real party in interest, or privy of the petitioner has infringed the patent; or CommentsClose CommentsPermalink





‘(C) the petitioner, real party in interest, or privy of the petitioner requests to dismiss hismoves the court to dismiss the civil action. CommentsClose CommentsPermalink





‘(3) TREATMENT OF COUNTERCLAIM- A counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection. CommentsClose CommentsPermalink





‘(b) Preliminary Injunctions- If a civil action alleging infringement of a patent is filed within 3 months after the date on which the patent is granted, the court may not stay its consideration of the patent owner’s motion for a preliminary injunction against infringement of the patent on the basis that a petition for post-grant review has been filed under this chapter or that such a post-grant review has been instituted under this chapter. CommentsClose CommentsPermalink





‘(c) Joinder- If more than 1 petition for a post-grant review under this chapter is properly filed against the same patent and the Director determines that more than 1 of these petitions warrants the institution of a post-grant review under section 324, the Director may consolidate such reviews into a single post-grant review. CommentsClose CommentsPermalink





‘(d) Multiple Proceedings- Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of any post-grant review under this chapter, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the post-grant review or other proceeding or matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such matter or proceeding. In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. CommentsClose CommentsPermalink





‘(e) Estoppel- CommentsClose CommentsPermalink





‘(1) PROCEEDINGS BEFORE THE OFFICE- The petitioner in a post-grant review under this chapterof a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to athat claim on any ground that the petitioner raised or reasonably could have raised during a post-grant review of the claim that resulted in a final written decision under section 328(a)that post-grant review. CommentsClose CommentsPermalink





‘(2) CIVIL ACTIONS AND OTHER PROCEEDINGS- The petitioner in a post-grant review under this chapterof a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that a claim in a patentthe claim is invalid on any ground that the petitioner raised or reasonably could have raised during a post-grant review of the claim that resulted in a final written decision under section 328(a)that post-grant review. CommentsClose CommentsPermalink





‘(f) Reissue Patents- A post-grant review may not be instituted under this chapter if the petition requests cancellation of a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued, and the time limitations in section 321(c) would bar filing a petition for a post-grant review for such original patent. CommentsClose CommentsPermalink

‘Sec. 326. Conduct of post-grant review

‘(a) Regulations- The Director shall prescribe regulations-- CommentsClose CommentsPermalink





‘(1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or document filed with the intent that it be sealed shall, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion; CommentsClose CommentsPermalink





‘(2) setting forth the standards for the showing of sufficient grounds to institute a review under subsections (a) and (b) of section 324; CommentsClose CommentsPermalink





‘(3) establishing procedures for the submission of supplemental information after the petition is filed; CommentsClose CommentsPermalink





‘(4) in accordance with section 2(b)(2), establishing and governing a post-grant review under this chapter and the relationship of such review to other proceedings under this title; CommentsClose CommentsPermalink





‘(5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to evidence directly related to factual assertions advanced by either party in the proceeding; CommentsClose CommentsPermalink





‘(6) prescribing sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding, such as to harass or to cause unnecessary delay or an unnecessary increase in the cost of the proceeding; CommentsClose CommentsPermalink





‘(7) providing for protective orders governing the exchange and submission of confidential information; CommentsClose CommentsPermalink





‘(8) allowing the patent owner to fileproviding for the filing by the patent owner of a response to the petition under section 323 after a post-grant review has been instituted, and requiring that the patent owner file with such response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response; CommentsClose CommentsPermalink





‘(9) setting forth standards and procedures for allowing the patent owner to move to amend the patent under subsection (d) to cancel a challenged claim or propose a reasonable number of substitute claims, and ensuring that any information submitted by the patent owner in support of any amendment entered under subsection (d) is made available to the public as part of the prosecution history of the patent; CommentsClose CommentsPermalink





‘(10) providing either party with the right to an oral hearing as part of the proceeding; and CommentsClose CommentsPermalink





‘(11) requiring that the final determination in any post-grant review be issued not later than 1 year after the date on which the Director notices the institution of a proceeding under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 325(c). CommentsClose CommentsPermalink





‘(b) Considerations- In prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter. CommentsClose CommentsPermalink





‘(c) Patent Trial and Appeal Board- The Patent Trial and Appeal Board shall, in accordance with section 6, conduct each proceeding authorized by the Director.‘(d)ost-grant review instituted under this chapter. CommentsClose CommentsPermalink





‘(d) Amendment of the Patent- CommentsClose CommentsPermalink





‘(1) IN GENERAL- During a post-grant review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways: CommentsClose CommentsPermalink





‘(A) Cancel any challenged patent claim. CommentsClose CommentsPermalink





‘(B) For each challenged claim, propose a reasonable number of substitute claims. CommentsClose CommentsPermalink





‘(2) ADDITIONAL MOTIONS- Additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 327, or upon the request of the patent owner for good cause shown. CommentsClose CommentsPermalink





‘(3) SCOPE OF CLAIMS- An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter. CommentsClose CommentsPermalink





‘(e) Evidentiary Standards- In a post-grant review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence. CommentsClose CommentsPermalink

‘Sec. 327. Settlement

‘(a) In General- A post-grant review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. If the post-grant review is terminated with respect to a petitioner under this section, no estoppel under section 325(e) shall apply to that petitionerttach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner’s institution of that post-grant review. If no petitioner remains in the post-grant review, the Office may terminate the post-grant review or proceed to a final written decision under section 328(a). CommentsClose CommentsPermalink





‘(b) Agreements in Writing- Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of a post-grant review under this section shall be in writing, and a true copy of such agreement or understanding shall be filed in the Office before the termination of the post-grant review as between the parties. If any party filing suchAt the request of a party to the proceeding, the agreement or understanding so requests, the copyhall be treated as business confidential information, shall be kept separate from the file of the post-grant reviewinvolved patents, and shall be made available only to Federal Government agencies upon written request, or to any otheron written request, or to any person on a showing of good cause. CommentsClose CommentsPermalink

‘Sec. 328. Decision of the Board

‘(a) Final Written Decision- If a post-grant review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 326(d). CommentsClose CommentsPermalink





‘(b) Certificate- If the Patent Trial and Appeal Board issues a final written decision under subsection (a) and the time for appeal has expired or any appeal has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable. CommentsClose CommentsPermalink





‘(c) Amended or New Claim- Any proposed amended or new claim determined to be patentable and incorporated into a patent following a post-grant review under this chapter shall have the same effect as that specified in section 252 of this title for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation therefor, before the issuance of a certificate under subsection (b). CommentsClose CommentsPermalink





‘(d) Data on Length of Review- The Office shall make available to the public data describing the length of time between the institution of, and the issuance of a final written decision under subsection (a) for, each post-grant review. CommentsClose CommentsPermalink

‘Sec. 329. Appeal

‘A party dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 328(a) may appeal the decision pursuant to sections 141 through 144. Any party to the post-grant review shall have the right to be a party to the appeal.‘Sec. 330. Request for stay of certain proceedings

‘If a party seeks a stay of a civil action alleging infringement of a patent under section 281, or a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930, relating to a post-grant review under this chapter, the court shall decide whether to enter a stay based on--

‘(1) whether a stay, or the denial thereof, will simplify the issues in question and streamline the trial;

‘(2) whether discovery is complete and whether a trial date has been set;

‘(3) whether a stay, or the denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party; and

‘(4) whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court.’. CommentsClose CommentsPermalink




(e) Conforming Amendment- The table of chapters for part III of title 35, United States Code, is amended by adding at the end the following: CommentsClose CommentsPermalink

-----------------------------

-----------------------------

-----------------------------

(f) Regulations and Effective Date- CommentsClose CommentsPermalink





(1) REGULATIONS- The Director shall, not later than the date that is 1 year after the date of the enactment of this Act, issue regulations to carry out chapter 32 of title 35, United States Code, as added by subsection (d) of this section. CommentsClose CommentsPermalink





(2) APPLICABILITY- CommentsClose CommentsPermalink





(A) IN GENERAL- The amendments made by subsection (d) shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and, except as provided in section 18 and in paragraph (3), shall apply to any patent that is described in section 23(n)(1). CommentsClose CommentsPermalink





(B) LIMITATION- The Director may impose a limit on the number of post-grant reviews that may be instituted under chapter 32 of title 35, United States Code, during each of the 4 years following the effective date set forth in subparagraph (A).(3)first 4 1-year periods in which the amendments made by subsection (d) are in effect. CommentsClose CommentsPermalink





(3) PENDING INTERFERENCES- CommentsClose CommentsPermalink





(A) PROCEDURES IN GENERAL- The Director shall determine, and include in the regulations issued under paragraph (1), the procedures under which an interference commenced before the effective date set forth in paragraph (2)(A) is to proceed, including whether such interference-- CommentsClose CommentsPermalink





(i) is to be dismissed without prejudice to the filing of a petition for a post-grant review under chapter 32 of title 35, United States Code; or CommentsClose CommentsPermalink





(ii) is to proceed as if this Act had not been enacted. CommentsClose CommentsPermalink





(B) PROCEEDINGS BY PATENT TRIAL AND APPEAL BOARD- For purposes of an interference that is commenced before the effective date set forth in paragraph (2), the Director may (A), the Director may deem the Patent Trial and Appeal Board to be the Board of Patent Appeals and Interferences, and may allow the Patent Trial and Appeal Board to conduct any further proceedings in that interference. CommentsClose CommentsPermalink





(C) APPEALS- The authorization to appeal or have remedy from derivation proceedings in sections 141(d) and 146 of title 35, United States Code, as amended by this Act, and the jurisdiction to entertain appeals from derivation proceedings insection 1295(a)(4)(A) of title 28, United States Code, as amended by this Act, shall be deemed to extend to any final decision in an interference that is commenced before the effective date set forth in paragraph (2)(A) of this subsection and that is not dismissed pursuant to this paragraph. CommentsClose CommentsPermalink





(g) Citation of Prior Art and Written Statements- CommentsClose CommentsPermalink





(1) IN GENERAL-Section 301 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

‘Sec. 301. Citation of prior art and written statements

‘(a) In General- Any person at any time may cite to the Office in writing-- CommentsClose CommentsPermalink





‘(1) prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent; or CommentsClose CommentsPermalink





‘(2) statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent. CommentsClose CommentsPermalink





‘(b) Official File- If the person citing prior art or written statements pursuant to subsection (a) explains in writing the pertinence and manner of applying the prior art or written statements to at least 1 claim of the patent, the citation of the prior art or written statements and the explanation thereof shall become a part of the official file of the patent. CommentsClose CommentsPermalink





‘(c) Additional Information- A party that submits a written statement pursuant to subsection (a)(2) shall include any other documents, pleadings, or evidence from the proceeding in which the statement was filed that addresses the written statement. CommentsClose CommentsPermalink





‘(d) Limitations- A written statement submitted pursuant to subsection (a)(2), and additional information submitted pursuant to subsection (c), shall not be considered by the Office for any purpose other than to determine the proper meaning of a patent claim in a proceeding that is ordered or instituted pursuant to section 304, 314, or 324. If any such written statement or additional information is subject to an applicable protective order, itsuch statement or information shall be redacted to exclude information that is subject to that order. CommentsClose CommentsPermalink





‘(e) Confidentiality- Upon the written request of the person citing prior art or written statements pursuant to subsection (a), that person’s identity shall be excluded from the patent file and kept confidential.’. CommentsClose CommentsPermalink





(2) CONFORMING AMENDMENT- The item relating to section 301 in the table of sections for chapter 30 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink





‘301. Citation of prior art and written statements.’. CommentsClose CommentsPermalink





(3) EFFECTIVE DATE- The amendments made by this subsection shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to any patent issued before, on, or after that effective date. CommentsClose CommentsPermalink





(h) Reexamination- CommentsClose CommentsPermalink





(1) DETERMINATION BY DIRECTOR- CommentsClose CommentsPermalink





(A) IN GENERAL-Section 303(a) of title 35, United States Code, is amended by striking ‘section 301 of this title’ and inserting ‘section 301 or 302’. CommentsClose CommentsPermalink





(B) EFFECTIVE DATE- The amendment made by this paragraph shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to any patent issued before, on, or after that effective date. CommentsClose CommentsPermalink





(2) APPEAL- CommentsClose CommentsPermalink





(A) IN GENERAL-Section 306 of title 35, United States Code, is amended by striking ‘145’ and inserting ‘144’. CommentsClose CommentsPermalink





(B) EFFECTIVE DATE- The amendment made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any appeal of a reexamination that is pending before the Board of Patent Appeals and Interferences or the Patent Trial and Appeal Board on or afterthat is pending on, or brought on or after, the date of the enactment of this Act. CommentsClose CommentsPermalink

SEC. 67. PATENT TRIAL AND APPEAL BOARD.

(a) Composition and Duties- CommentsClose CommentsPermalink





(1) IN GENERAL-Section 6 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

‘Sec. 6. Patent Trial and Appeal Board

‘(a) In General- There shall be in the Office a Patent Trial and Appeal Board. The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Patent Trial and Appeal Board. The administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Secretary, in consultation with the Director. Any reference in any Federal law, Executive order, rule, regulation, or delegation of authority, or any document of or pertaining to the Board of Patent Appeals and Interferences is deemed to refer to the Patent Trial and Appeal Board. CommentsClose CommentsPermalink





‘(b) Duties- The Patent Trial and Appeal Board shall-- CommentsClose CommentsPermalink





‘(1) on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a); CommentsClose CommentsPermalink





‘(2) review appeals of reexaminations pursuant to section 134(b); CommentsClose CommentsPermalink





‘(3) conduct derivation proceedings pursuant to section 135; and CommentsClose CommentsPermalink





‘(4) conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32. CommentsClose CommentsPermalink





‘(c) 3-Member Panels- Each appeal, derivation proceeding, post-grant review, and inter partes review shall be heard by at least 3 members of the Patent Trial and Appeal Board, who shall be designated by the Director. Only the Patent Trial and Appeal Board may grant rehearings. CommentsClose CommentsPermalink





‘(d) Treatment of Prior Appointments- The Secretary of Commerce may, in the Secretary’s discretion, deem the appointment of an administrative patent judge who, before the date of the enactment of this subsection, held office pursuant to an appointment by the Director to take effect on the date on which the Director initially appointed the administrative patent judge. It shall be a defense to a challenge to the appointment of an administrative patent judge on the basis of the judge’s having been originally appointed by the Director that the administrative patent judge so appointed was acting as a de facto officer.’. CommentsClose CommentsPermalink





(2) CONFORMING AMENDMENT- The item relating to section 6 in the table of sections for chapter 1 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink





‘6. Patent Trial and Appeal Board.’. CommentsClose CommentsPermalink





(b) Administrative Appeals-Section 134 of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(1) in subsection (b), by striking ‘any reexamination proceeding’ and inserting ‘a reexamination’; and CommentsClose CommentsPermalink





(2) by striking subsection (c). CommentsClose CommentsPermalink





(c) Circuit Appeals- CommentsClose CommentsPermalink





(1) IN GENERAL-Section 141 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

‘Sec. 141. Appeal to the Court of Appeals for the Federal Circuit

‘(a) Examinations- An applicant who is dissatisfied with the final decision in an appeal to the Patent Trial and Appeal Board under section 134(a) may appeal the Board’s decision to the United States Court of Appeals for the Federal Circuit. By filing such an appeal, the applicant waives his or her right to proceed under section 145. CommentsClose CommentsPermalink





‘(b) Reexaminations- A patent owner who is dissatisfied with the final decision in an appeal of a reexamination to the Patent Trial and Appeal Board under section 134(b) may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit. CommentsClose CommentsPermalink





‘(c) Post-Grant and Inter Partes Reviews- A party to a post-grant or inter partesn inter partes review or a post-grant review who is dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) or 328(a) (as the case may be) may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit. CommentsClose CommentsPermalink





‘(d) Derivation Proceedings- A party to a derivation proceeding who is dissatisfied with the final decision of the Patent Trial and Appeal Board in the proceeding may appeal the decision to the United States Court of Appeals for the Federal Circuit, but such appeal shall be dismissed if any adverse party to such derivation proceeding, within 20 days after the appellant has filed notice of appeal in accordance with section 142, files notice with the Director that the party elects to have all further proceedings conducted as provided in section 146. If the appellant does not, within 30 days after the filing of such notice by the adverse party, file a civil action under section 146, the Board’s decision shall govern the further proceedings in the case.’. CommentsClose CommentsPermalink





(2) JURISDICTION-Section 1295(a)(4)(A) of title 28, United States Code, is amended to read as follows: CommentsClose CommentsPermalink





‘(A) the Patent Trial and Appeal Board of the United States Patent and Trademark Office with respect to a patent application, derivation proceeding, reexamination, post-grant review, or inter partes review under title 35, at the instance of a party who exercised that party’s right to participate in the applicable proceeding before or appeal to the Board, except that an applicant or a party to a derivation proceeding may also have remedy by civil action pursuant to section 145 or 146 of title 35; an appeal under this subparagraph of a decision of the Board with respect to an application or derivation proceeding shall waive the right of such applicant or party to proceed under section 145 or 146 of title 35;’. CommentsClose CommentsPermalink





(3) PROCEEDINGS ON APPEAL-Section 143 of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(A) by striking the third sentence and inserting the following: ‘In an ex parte case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all of the issues raised in the appeal. The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135 or in an inter partes or post-grant review under chapter 31 or 32.’; and CommentsClose CommentsPermalink





(B) by striking the last sentence. CommentsClose CommentsPermalink





(d) Effective Date- The amendments made by this section shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to proceedings commenced on or after that effective date, except that-- CommentsClose CommentsPermalink





(1) the extension of jurisdiction to the United States Court of Appeals for the Federal Circuit to entertain appeals of decisions of the Patent Trial and Appeal Board in reexaminations under the amendment made by subsection (c)(2) shall be deemed to take effect on the date of the enactment of this Act and shall extend to any decision of the Board of Patent Appeals and Interferences with respect to a reexamination that is entered before, on, or after the date of the enactment of this Act; CommentsClose CommentsPermalink





(2) the provisions of sections 6, 134, and 141 of title 35, United States Code, as in effect on the day before the date of the enactment of this Act shalleffective date of the amendments made by this section shall continue to apply to inter partes reexaminations that are requested under section 311 of such title before the effective date of the amendments made by this sectionsuch effective date; CommentsClose CommentsPermalink





(3) the Patent Trial and Appeal Board may be deemed to be the Board of Patent Appeals and Interferences for purposes of appeals of inter partes reexaminations that are requested undersection 311 of title 35, United States Code, before the effective date of the amendments made by this section; and CommentsClose CommentsPermalink





(4) the Director’s right under the fourth sentence ofsection 143 of title 35, United States Code, as amended by subsection (c)(3) of this section, to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board shall be deemed to extend to inter partes reexaminations that are requested under section 311 of such title before the effective date of the amendments made by this section. CommentsClose CommentsPermalink

SEC. 78. PREISSUANCE SUBMISSIONS BY THIRD PARTIES.

(a) In General-Section 122 of title 35, United States Code, is amended by adding at the end the following: CommentsClose CommentsPermalink





‘(e) Preissuance Submissions by Third Parties- CommentsClose CommentsPermalink





‘(1) IN GENERAL- Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of-- CommentsClose CommentsPermalink





‘(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or CommentsClose CommentsPermalink





‘(B) the later of-- CommentsClose CommentsPermalink





‘(i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or CommentsClose CommentsPermalink





‘(ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent. CommentsClose CommentsPermalink





‘(2) OTHER REQUIREMENTS- Any submission under paragraph (1) shall-- CommentsClose CommentsPermalink





‘(A) set forth a concise description of the asserted relevance of each submitted document; CommentsClose CommentsPermalink





‘(B) be accompanied by such fee as the Director may prescribe; and CommentsClose CommentsPermalink





‘(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.’. CommentsClose CommentsPermalink





(b) Effective Date- The amendments made by this section shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to any patent application filed before, on, or after that effective date. CommentsClose CommentsPermalink